Tag Archives: Gibson

Where you stand depends on where you sit

Originally posted 2009-12-28 09:00:50. Republished by Blog Post Promoter

I’ve never had a guest post in response to a LIKELIHOOD OF CONFUSION® item before, but that’s only because no one with the stature to respond to something I’ve written here based on personal knowledge of the facts has ever had the nerve to ask for one — not until I entered the rock and roll world of the fascinating Ritchie Fliegler, that is.  Ritchie’s a marketing guy, not a lawyer, so, naturally, he’s not afraid to speak truth to, uh, whatever it is this thing we have here is.Here’s what I would love to be able to say is the first of many replies to a LOC blog post from someone with a different point of view, and in a position to know. — RDC


“Where you stand depends on where you sit” – Nelson Mandela

This is one of my favorite quotes.  Not only does it ring true on so many levels, it’s also easier to understand than Einstein’s theory of relativity, which says basically the same thing —“Two events, simultaneous for some observer, may not be simultaneous for another observer if the observers are in relative motion.”

What does this have to do with trademark law? Not much actually, but it has a lot to do with a spirited and interesting conversation I had recently, with Ron.

Like many of you, my Google alerts are set to tick off on a number of subjects near and dear to me, classic cars, family members, former employers and the like. A few days ago the Google light went off alerting me to a blog post about a former employer, Fender Musical Instruments Corporation (FMIC) and their failed attempt to register trademarks for their famous guitar-body shapes – Strat, Tele and P-Bass. The article was well written, and thoughtful, however, in a vortex of relativity that would do ol’ Albert proud, my blood started to boil at what I perceived as purposeful errors and omissions by an uninformed outsider.

Now, I have been away from FMIC for well over two years, but I still have many dear friends at the place as well as a lingering vested interest… so I sprung in to action and sent a message with a requisite level of rancor. Read More…

Gibson continues its IP-based business plan

Originally posted 2010-11-25 20:36:59. Republished by Blog Post Promoter

“You’re gonna have to face it, you’re addicted to law!”

Well, that’s what the song always sounded like to  me.  When you’re a hammer… (and I do try to be a hammer!) …

Surely the subject of that years-ago Robert Palmer MTV cheesecake staple must be Gibson, the litigation-addled guitar company.  (Yes, one of the three guitars in the video may very well have been a Gibson, as I vaguely remember it!)  And, as I’ll explain, they’re at it again.

What's the matter with you? Is this what you've become?

From the very beginning I’ve pondered all these out-of-tune lawsuits, followed them and mostly spanked Gibson and fellow guitar litigator Fender — and maybe a little bit got spanked back here, you think? (I don’t) — for litigating instead of making beautiful musical instruments and selling them to make beautiful music.

Not that litigation isn’t music to my ears.  It is! So I’m going to enjoy — I’m going to give thanks, even — for this posting from Trademark Scroll that, well, is just this Scribd upload of the complaint with the highly descriptive title, “Gibson Guitar is suing multiple defendants, including Wal-Mart, Amazon, eBay and others over trademark infringement.”  I actually see the outlines of a strategy:  keep thinking of defendants until you find one you can win against!

Works for me!  Especially considering that, well, there is always the possibility that this time Gibson really is right.  Right?

Trade Dress Rights in Musical Instruments

Originally posted 2005-01-07 09:57:00. Republished by Blog Post Promoter

John Welch’s TTAB Blog — which monitors developments at the Trademark Trials and Appeals Board — picks up this recommended reading from a recent article in the Trademark Reporter journal on the topic of trade dress rights in musical instruments. John quotes authors Robert M. Kunstadt and Ilaria Maggioni commenting on the recent decision in Gibson Guitar Corp. v. Paul Reed Smith Guitars, LP, 70 UPSQ2d 1911 (M.D. Tenn. 2004), which ruled in essence that under trade dress law, only a Gibson guitar can make a Gibson-looking guitar, to wit:

[H]ad the court properly appreciated how to play a LES PAUL guitar, the court would not have granted summary judgment for Gibson. At a minimum, the functionality of the alleged Gibson trade dress features presents fact issues for trial.

In other words, a Gibson looks like a Gibson because it sounds like a Gibson — and in trademark law, functional features are not granted trademark protection. (If they’re novel, you may be able to get a patent, of course.)

Ron Coleman and Flammable Dog 1980I don’t know as much about guitars as these authors, I guess, but back in the day when I used to play bass guitar on my Gibson SG — copy! — (see leftl yep, that’s your blogger) I sure knew that it wasn’t playing like the real thing. But it did look enough like a Gibson and, what I found most valuable, had a guitar-proportioned fret board unlike the long Fender basses that were most popular but which I found harder to play. So on the one hand I, as the consumer, was driven by functionality. On the other hand, I wanted a bass that looked like a real big-boy bass. Considering the fairly low quality of my instrument, it’s hard to imagine that the product configuration had much if anything to do with how it sounded. At the end of the day, and on a quick read of the excerpts, I might agree with the TTAB here.

UPDATE: On the other hand, the issue isn’t how my Acme guitar’s sound was affected by its shape, it’s how the Gibson was — that’s what drives the functionality argument. So perhaps I should reconsider after I read the whole opinion and the article.

Gibson argues for brand on the merits

Originally posted 2009-07-16 10:25:07. Republished by Blog Post Promoter

Since the beginning I’ve been blogging about the attempts by Gibson and Fender, the makers of fine guitars, to avoid copycat competition via the trademark and litigation route.  My most recent post on the progress of that campaign is here, where I wrote:

[T]he main reward for a great, original product is a successful business based on that product.  Intellectual property notwithstanding, the best way to protect most great ideas is by consistently excellent execution, high quality, responsive customer service, continued innovation and overall staying ahead of the competition by delivering more value.  . . .  [I]f an enterprise can’t fathom protecting its value proposition without some kind of gaudy trademark protection, ultimately something has to give.

Fender, according to the record in this opinion, understood the truth well for decades.  It warned consumers to stick with its quality “originals” and not to be fooled by “cheap imitations,” and it flourished.  But for all these years, Fender never claimed to think the sincerest form of flattery was against the law.  Only in the feverish IP-crazy atmosphere of our current century did the company deem it “necessary” to spend a fortune that could have been used on product development, marketing or any darned thing on a quixotic quest for a trademark it never believed in itself.  That is more than an impossible dream — it’s a crying shame.

Fake rock star with fake Gibson

Fake rock star with fake Gibson

Gibson is beginning to make its arguments to consumers on the merits, now, instead.  Via @megLG (Megan Langley Grainger), Gibson is now online with what looks like a blog post that shows you, with words and music — well, no, that would actually have been really compelling, but at least with words and pictures — how to tell the difference between a counterfeit Gibson and the real thing.

The piece is pretty interesting, especially for a former guitar player, although it is entirely about counterfeit Gibson guitars (bearing the GIBSON name and trademark), which are clearly a trademark infringement.  That’s not the same as knockoffs — copies of unprotectible elements of the guitar style meant to evoke the Gibson (or Fender) “look” — which is what I’ve written about in the past.

Unfortunately for Gibson, they hired someone out of the RIAA copywriting program and gave this very cool, informative and interesting post the leaden title, “Gibson Leads Industry Fight Against Counterfeit Gibsons,”  instead of “Is Your Gibson the Real Thing?” or “How to Spot a Fake Gibson.”  Read More…

Reversal Strummed Up in Gibson Guitars Case

Originally posted 2005-09-15 16:25:38. Republished by Blog Post Promoter

The AP reports:

NASHVILLE, Tenn. Nashville-based Gibson Guitar Corporation has lost a legal battle. A federal appeals court has ruled that a competitor‘s copy of Gibson’s popular Les Paul model does not infringe on Gibson’s trademark.

Here’s a link to the decision.

We blogged on this story a while back and expressed some doubt about the lower-court decision. Guess now it’s Gibson‘s turn to fret.

While my guitar gently weeps

One of the first posts on LIKELIHOOD OF CONFUSION® was about Gibson Guitar Corp. v. Paul Reed Smith Guitars, LP, 70 UPSQ2d 1911 (M.D. Tenn. 2004), and the question of whether “only a Gibson guitar can make a Gibson-looking guitar.”   Not long after that decision came down, Gibson’s rival Fender filed for what it now evidently believed it had a shot at getting — a trademark registration for guitar shapes.

Fender had an uphill battle, though.  Not only would it have to satisfy the post-TrafFix Devices standard for protection of a product configuration as a trademark, namely showing that the feature claimed as a trademark is not functional.  In addition, because in the case of a musical instrument the product is the  packaging, Fender would have to prove  “acquired distinctiveness” for its would-be trademark-protected products, such that “the primary significance of the product configuration in the minds of consumers is not the product but the source of that product.”  (Remember that.)
Obviously, however, Fender was emboldened by the Gibson decision.  Never mind that in September, 2005, the Sixth Circuit reversed the Middle District of Tennessee ruling in Gibson, in an opinion which rejected a unique theory of LIKELIHOOD OF CONFUSION.  It was a variation of downstream or post-sale likelihood of confusion divided by “initial-interest confusion,” a combination the court termed “smoky-bar confusion”:


Smokin' Guitar

Finally, Gibson argues that, taken together, the initial-interest-confusion and post-sale confusion doctrines should be extended to include something that we can only describe as a “smoky-bar theory of confusion.” Initial-interest-confusion doctrine, which we have already rejected on the facts of this case, applies when allegedly improper use of a trademark attracts potential purchasers to consider products or services provided by the infringer. Post-sale-confusion doctrine, which we have also rejected on the facts of this case, applies when allegedly improper use of protected trade dress on a lower-quality product diminishes the reputation of the holder of the rights to that trade dress. In the smoky-bar context, however, Gibson does not suggest that consumer confusion as to the manufacturer of a PRS guitar would lead a potential purchaser to consider purchasing a PRS, rather than a Gibson, or that Gibson’s reputation is harmed by poor-quality PRS guitars. Rather, Gibson argues that this confusion occurs when potential purchasers see a musician playing a PRS guitar and believe it to be a Gibson guitar:


Smokey B'ar

In the context of guitar sales, initial interest confusion is of real consequence. Guitar manufacturers know that they can make sales by placing their guitars in the hands of famous musicians. On a distant stage, a smoky bar, wannabe musicians see their heroes playing a guitar they then want.

As Gibson concedes that PRS produces high-quality guitars, we do not believe such an occurrence could result in confusion harmful to Gibson.  If a budding musician sees an individual he or she admires playing a PRS guitar, but believes it to be a Gibson guitar, the logical result would be that the budding musician would go out and purchase a Gibson guitar. Gibson is helped, rather than harmed, by any such confusion.

Fender, nonetheless, forged ahead.  This did not go unnoticed: a phalanx of guitar manufactures promptly opposed the application.  And now, according to the blog of Musical Instrument Professional magazine, MIPro:

MMR Magazine has reported that FMIC’s US trademark applications concerning its Stratocaster, Telecaster and Precision guitar body shapes have been rejected. Similar applications have previously been rejected, both in the UK and the rest of Europe. Read More…

Strumming their fate

We blogged a while ago about the Les Paul guitar lawsuit, based on the idea that the shape of the Les Paul guitar was a trademark of Gibson Guitars when the District of Tennessee declined to agree with that idea. Now it’s been finally resolved, and the winner isn’t Gibson — the Supreme Court denied to hear their appeal from the Sixth Circuit Court of Appeals, which affirmed the decision. The Baltimore Sun reports:

William D. Coston, a Venable LLP attorney who represented Paul Reed Smith in the case, said the appellate court ruling and the Supreme Court’s refusal to hear the case further clarify trademark restrictions on product shape.

“The law says to win a trademark case you have to show a likelihood of confusion,” Coston said. “Gibson was forced to concede that no one would ever be confused at the point of sale.”

Steve Duvall, a sales associate at Music-Go-Around in Cockeysville, said many companies have mimicked the Les Paul style.

“For the longest time, Gibson overlooked it,” he said. But with the popularity of the Paul Reed Smith’s Singlecut, “the company had really broken into the same market.”

Point of sale, not “initial interest,” is what governs confusion? What a concept!